The opinion of the court was delivered by: Hillman, District Judge
Presently before the Court is WHY ASAP, LLC's motion to amend its counterclaim against Jumpit AS [Docket No. 41]. Also before the Court is Jumpit AS's motion to dismiss all of its claims of infringement against WHY ASAP, LLC and to dismiss WHY ASAP, LLC's declaratory judgment counterclaim against Jumpit AS [Docket No. 42]. For the reasons expressed below, both parties' motions will be granted.
This is a consolidated matter concerning United States Patent Number 6,709,784 ("'784 patent") entitled "Back-Up Battery for a Cellular Telephone." Jumpit AS ("Jumpit") filed suit against WHY ASAP, LLC ("WHY ASAP") and Barry Bookman alleging that their Flash Cellular Power device has infringed and is infringing on Jumpit's patent. WHY ASAP and Bookman filed a counterclaim seeking a declaratory judgment that (1) they have not infringed, and are not infringing, on the '784 patent, (2) the patent is invalid, (3) the patent is unenforceable by reason of inequitable conduct, and (4) that the case is exceptional under 35 U.S.C. § 285 and warrants the award of attorneys fees.
In a separate action, WHY ASAP filed suit against Compact Power, which manufacturers the product CELLBOOST pursuant to Jumpit's '784 patent. WHY ASAP claims that Compact Power has interfered with its business by contacting its customers and advising them that its product was infringing on the '784 patent.
WHY ASAP has moved to amend its counterclaim against Jumpit to include counts for "false description and/or representation," "unfair competition and unfair trade practices," "harassment," and "fraud, inequitable conduct and/or violation of duty of disclosure." Jumpit opposes WHY ASAP's motion on the basis that these amendments would be futile because they fail to state a claim upon which relief may be granted and would fail to survive a motion to dismiss based on the Noerr-Pennington doctrine.
Concurrently, Jumpit has moved to voluntarily dismiss its infringement claims against WHY ASAP and to dismiss WHY ASAP's original counterclaim for declaratory relief. No motion has necessitated the participation of Compact Power, but the resolution of the pending motions could affect WHY ASAP's suit against Compact Power, which has explained the potential effect in informal correspondence to the Court.
Jumpit contends that WHY ASAP's claims would not survive a motion to dismiss because WHY ASAP's claims are bald, unsupported conclusory statements that do not invoke the "sham exception" to the Noerr-Pennington doctrine. Because WHY ASAP's claims would not survive a motion to dismiss, Jumpit argues that WHY ASAP should not be permitted to amend its counterclaim to assert additional claims against Jumpit since the amendments would be futile.
Amendments to pleadings are governed by Federal Civil Procedure Rule 15, which provides that leave to file an amended pleading "shall be freely given as justice so requires." Fed. R. Civ. P. 15(a). The Third Circuit has shown a strong liberality in allowing amendments under Rule 15 in order to ensure that claims will be decided on the merits rather than on technicalities. Dole v. Arco Chemical Co., 921 F.2d 484, 487 (3d Cir. 1990); Bechtel v. Robinson, 886 F.2d 644, 652 (3d Cir. 1989). An amendment must be permitted in the absence of undue delay, bad faith, dilatory motive, unfair prejudice, or futility of amendment. Grayson v. Mayview State Hosp., 293 F.3d 103, 108 (3d Cir. 2002) (citing Foman v. Davis, 371 U.S. 178, 182 (1962)).
Here, Jumpit invokes the Noerr-Pennington doctrine to support its claim that WHY ASAP's amendments are futile and, as such, should not be permitted. The Noerr-Pennington doctrine generally provides immunity from antitrust liability to those who petition the government for redress. Mine Workers v. Pennington, 381 U.S. 657, 670 (1965). This immunity serves to protect "from the Sherman [Antitrust] Act a concerted effort to influence public officials regardless of intent or purpose." Id.
Lawsuits are ordinarily protected activity under NoerrPennington, but the Supreme Court has established a "sham exception." See Professional Real Estate Investors, Inc. v. Columbia Pictures Industry, Inc., 508 U.S. 49, 51 (1993). A lawsuit "does not qualify for . . . immunity if it 'is a mere sham to cover . . . an attempt to interfere directly with the business relationships of a competitor."' Id. (quoting Eastern Railroad Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127, 144 (1961)). In the Third Circuit, the NoerrPennington immunity has been extended to tort claims based on New Jersey state law. Cheminor Drugs, Ltd. v. Ethyl Corp., 168 F.3d 119, 128 (3d Cir. 1999) (citation omitted) ("We are persuaded that the same First Amendment principles on which NoerrPennington immunity is based apply to the New Jersey tort claims.").
Based on this premise, Jumpit argues that WHY ASAP cannot show that Jumpit's infringement suit against WHY ASAP is a "sham," and, thus, Jumpit is immune from liability on WHY ASAP's counterclaims. In order to determine whether Jumpit's suit against WHY ASAP is a sham, WHY ASAP must demonstrate that (1) Jumpit's lawsuit is "objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits[;]" and (2) the lawsuit conceals "an attempt to interfere directly with the business relationships of a competitor, through the use of the governmental process-as opposed to the outcome of that process-as an anticompetitive weapon[.]" Professional Real Estate, 508 U.S. at 60-61 (emphasis in original) (other citations omitted).
The "objectively baseless" standard in the first prong of the test is analogized to the concept of "probable cause as understood and applied in the commonlaw tort of wrongful civil proceedings[.]" Id. at 62. "Probable cause to institute civil proceedings requires no more than a reasonable belief that there is a chance that a claim may be held valid upon adjudication[.]" Id. (citation omitted). Thus, the first prong of the test, with its emphasis on the reasonable litigant, is concerned with the objective merits of the lawsuit at issue. In order to overcome Noerr-Pennington immunity, ...